Colour becomes more difficult to protect
A recent case in the Federal Court, Woolworths Ltd v. BP. Plc (No 2) (2007) 70 IPR 25, (“BP”) places practical barriers to protection of colour as part of a brand in Australia.
BP Plc had made two applications for registration of the colour green as a trade mark in association with service stations. Woolworths opposed registration of the applications on the basis that the colour green was not capable of distinguishing BP’s goods or services. BP argued that the colour green was distinctive, backing its contention with consumer survey evidence.
In its decision in favour of Woolworths, the Full Federal Court said that “merely applying colour to a product will not act as an identifier (or brand) for that product”. For colour to function as a trade mark, it said, the public must appreciate the brand significance or distinctiveness of the colour. The use of colour must inform the public that products emanate from a particular source.
This may be difficult to prove, as BP has found. Even with survey evidence showing that a majority of Australian consumers would associate the colour ‘green’ with BP, the court found this association insufficient to demonstrate distinctiveness. BP’s registrations for the colour green were found not distinctive and incapable of protection. In particular, the Court held that the colour lacked any inherent ability to distinguish BP’s goods and services from those of other traders.
Marketers now need to be more wary of the approach of Australian law to protection of colour trade marks in branding strategy. Colours may certainly be protected as trade marks, but care will be needed in the protection strategy.
The elements of brand identity
Brand identity is a critical attribute for a business. How does a business communicate, at the simplest level, with its customers? Historically, words and logos have been used to communicate marketing messages. They are still effective devices, but techniques to reach the consumer have become ever more sophisticated.
Brand identity today may involve the use of shape, colour, sound, scent and holograms, among other elements. Less than 20 years ago, trade mark laws that offer important protection for brands did not accept these techniques for communicating brand identity.
Since 1995, Australian trade mark law has (at least in theory) provided protection for shape, colour, scent and sound. This approach is mirrored in many other countries and regions, including the European Union.
Sonic and sensual techniques are increasingly important in communicating brand identity. Initially, sensual branding started in the fashion industry, but its techniques are also being used in the computer industry. Similarly, sonic branding started with the Harley-Davidson engine note but has grown into a sophisticated strategy of greater importance to the media and entertainment industries.
However, shape and colour are still the two most important aspects of brand identity. Australian trade mark laws are supposed to protect these, but do they achieve this objective in practice?
What trade mark law requires
The experience for those seeking to protect shape and colour has been frustrating and expensive. The problem stems from an inability to simply register and protect such elements by filing an application at the Trade Marks Office.
Trade mark law does not assume that shape and colour are valuable elements of brand identity. Rather, this must be proved through evidence that brand equity is generated by such elements. Are consumers attracted to a particular product or service through use of colour or shape?
In trade mark law, brand equity is called “distinctiveness”. Distinctiveness or brand equity must be proved in the cases where colour and shape are included as part of the protected elements of a brand. Such trade marks are not automatically considered to have any inherent capacity to distinguish. However, this view may be displaced by appropriate preparation of the case for protection and, in particular, evidence showing that a mark is distinctive or capable of generating brand equity.
In the confectionery industry, for example, shape is extremely important. Particular animal or other shapes can be used to communicate a brand very powerfully. Great brand equity may be generated through the use of such shapes. Registration requires evidence as proof of this. This is where it can become expensive, because data to show that the brand is distinctive must be collated and submitted to the Trade Marks Office.
Careful preparation of your case for protection
The role of a trade mark attorney is to simplify this process as much as possible through the use of questionnaires and meetings with the client to identify sources of evidence, such as advertisements, advertising/marketing expenditure, sales figures, and promotional material such as brochures and videos. These can be used to help establish brand equity. Marketing metrics may also offer invaluable support. Good preparation is a key to handling the protection strategy for a new brand.
To have colour recognised as part of a brand, particularly careful preparation is needed. Colour has been an issue because the reasoning is that there are relatively few colours available and marketers for many different businesses may wish to use the same colour in their branding strategy.
To protect a colour, it is important to:
- Accurately identify the colour or colour combination that you intend to use in your branding strategy (e.g. use of CMYK and/or PMS colour formulas).
- Align the trade mark application directly with the colour or colour combination identified as the brand. In the BP case, green was found not to be the brand promoted in practice. Rather, BP used green in association with other colours. Therefore, trade mark applications need to be made consistent with the colour or colour combination selected as a brand element by the marketer.
- Align marketing strategy closely with the colour or colour combination that has been identified as the brand. Marketing guidelines, all promotional material and get-up, if relevant, must all be consistent with the selected colour or colour combination.
- Where possible, use marketing metrics to demonstrate customer response to promotional efforts. Has the brand increased market share or shares? Do surveys show customer response to the brand?
Marketing metrics may be able to provide solid, measurable evidence to back up the accepted traits of distinctiveness already discussed. This may not be readily available at the launch of a product or brand, but even evidence of market activity generated after filing will help to demonstrate distinctiveness, possibly displacing the burden to prove that a trade mark has some inherent capacity to distinguish.
By proper and early preparation, it is more likely that the brand protection strategy will be more closely aligned with the marketing strategy. More importantly, brand protection issues may be resolved through the language and techniques of marketing before they can become legal problems with expensive consequences.
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